Kompass International Neuenschwander S.A. v EDP Compass AG

This case concerns an opposition by EDP Compass AG (EDP) to an application by Kompass International Neuenschwander S.A. (Kompass) for an extension of time to lodge evidence in answer to applications for the removal of two trade mark registrations from the Register. The trade marks in question, registered under nos. 341466 and 341467, comprise the word KOMPASS and a compass device, registered for services related to commercial and economic information in class 35, and electronic data processing and computer programming in class 42. EDP had lodged applications for removal on 10 June 1994, Kompass lodged its opposition on 18 November 1994, and EDP served its evidence in support on 3 March 1995, making Kompass's evidence in answer due on 3 June 1995. Kompass sought and was granted a three-month extension to 3 September 1995, and subsequently sought a further three-month extension to 3 December 1995, which EDP opposed. The matter was heard by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether to grant Kompass a second extension of time to file its evidence in answer, despite EDP's objections. This required the delegate to consider the adequacy of the reasons provided by Kompass for the further delay, the progress made in assembling the evidence, the relative inconvenience to the parties, and the public interest. EDP argued that Kompass had not sufficiently justified the extension, had not demonstrated active pursuit of the matter, and that the delay was causing financial disadvantage due to ongoing extension fees for its own blocked trade mark applications. Kompass contended that delays were attributable to an assignment of the trade mark in 1995, changes in overseas attorneys, communication difficulties as an overseas company, and the need to gather information from third parties and a proposed registered user.

The delegate applied the principles outlined in *Lyons and Another (trading as Mitty’s authorised Newsagency v. Registrar of Trade Marks and Another*, considering whether a proper case had been made out, sufficient reasons provided, the relative inconvenience, and the public interest. The delegate found that Kompass's reasons, while not overly detailed, indicated progress in assembling evidence, particularly given the complexities of gathering information from overseas and involving third parties, which is a common feature of opposition proceedings. The delegate also noted that a statutory declaration had been lodged after the first extension. Balancing the inconvenience, the delegate determined that denying the extension would cause greater hardship to Kompass by potentially causing the loss of its registration due to a technicality, compared to the financial disadvantage and potential delay to EDP's applications. The delegate also considered the public interest in allowing both parties to present their evidence fully.

Ultimately, the delegate decided to allow the further three-month extension of time to 3 December 1995, finding that Kompass had provided sufficient reasons indicating progress and had met its onus to justify the extension. Consequently, costs in the matter were awarded to Kompass.